Application of Dailey, Patent Appeal No. 8936.

• Decision Date: 28 June 1973
• Docket Number: Patent Appeal No. 8936.
• Citation: 178 USPQ 293,479 F.2d 1398
• Parties: Application of Lawrence W. DAILEY.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

178 USPQ 293, 479 F.2d 1398 (1973)

Application of Lawrence W. DAILEY.

Patent Appeal No. 8936.

United States Court of Customs and Patent Appeals.

June 28, 1973.

Edward J. DaRin, John P. Grinnell, Christie, Parker & Hale, Pasadena, Cal., John A. Finken, Wynne & Finken, Washington, D. C., attorneys of record, for appellant.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jack E. Armore, Washington, D. C., John W. Will, Classification Division, U. S. Patent Office, of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.

MARKEY, Chief Judge.

This appeal is from the decision of the Board of Appeals, affirming the rejection under 35 U.S.C. § 103 of claim 1 in appellant's application, serial No. 669,950, filed September 22, 1967, entitled "Method for Introducing Hydrogen into a Hydrogen Consuming Reactor Circuit," as unpatentable over Jackson.¹ Claims 3-15 have been allowed. We affirm.

The Invention

Claim 1, with reference numerals inserted, read in conjunction with the following excerpt from the application drawing, is illustrative of appellant's claimed invention:

1. In a relatively high pressure hydrogen consuming process of the type wherein hydrocarbon feed material 28 is introduced into a hydrogen consuming reactor circuit 10 and converted in at least one reactor 26 to form a reactor effluent stream 30 containing reactor products with the conversion occurring in the presence of hydrogen from a vapor stream 40, an improvement in the method of introducing the hydrogen into the hydrogen consuming reactor circuit comprising the steps of:

(a) producing a hydrocarbon diluent from the reactor effluent having a relatively high molecular weight compared to hydrogen;

(b) combining the diluent with hydrogen at a relatively low pressure to form a resultant stream 20 having an average molecular weight which enables compression of such stream by centrifugal compression to an introduction pressure which is sufficient for the resultant stream to enter the hydrogen consuming reactor circuit ;

(c) compressing the resultant stream in at least one centrifugal compressor 24 to the introduction pressure;

(d) introducing the compressed resultant stream into the hydrogen consuming reactor circuit ;

(e) separating at least a substantial amount of the diluent from the hydrogen ; and

(f) introducing the hydrogen separated from the diluent into the vapor stream.

Appellant further discloses in the specification that:

In addition, the hydrocracker reactor circuit is important to illustrate the point and condition of resultant stream entrance into the circuit. The point of introduction 34 is where the pressure of the reactor effluent and resultant stream 20 are essentially equal. Moreover, the introduction point is preferably where the temperature of the reactor effluent stream and the resultant stream are also essentially equal.

The liquid portion of the reactor effluent stream acts as a sponging medium to take out diluent and purify the vapor stream.

The mixed stream 34 which includes "reactor products, recycle gas, possible recycle liquid, diluent, and hydrogen" is reduced in temperature in heat exchanger 36 for the separating step in separator 38 into the vapor stream 40 ("50 to 90 mol per cent hydrogen") and liquid stream 42. The vapor stream 40 is compressed in compressor 44 to provide a sufficiently high partial pressure of the hydrogen as required in the reactor.

The Prior Art

Jackson discloses a process that is quite similar to appellant's disclosed process and differs mainly in that the hydrogen-diluent mixture ("90% hydrogen") after being compressed is introduced directly into the vapor stream that is introduced into the reactor. The effluent stream exiting from the reactor of Jackson which includes the reactor product, the diluent, and unreacted hydrogen is directed to a separator where unreacted hydrogen is separated and recycled into the vapor stream containing the compressed hydrogen-diluent mixture, and the diluent and reactor product are passed out of the reactor circuit.

The Rejection

As stated in the solicitor's brief :

The examiner stated in his final rejection that "while the Jackson reference discloses passing the hydrogen and diluent under higher pressure directly into the hydrogenation zone reactor, since the diluent does not affect the reaction, it would be an obvious variant to separate the diluent under the high pressure by conventional means in order to avoid diluting the hydrogen required for the hydrogenation process," and that "such an obvious variant over the teaching in the Jackson reference is within the skill of the art, not amounting to invention unobviousness." Since * * * that rejection was not reversed by the Board, * * * it is appropriately before us. In re Stephens, 47 CCPA 1028, 278 F.2d 980 950 126 USPQ 190.

The board held that claim 1 read directly on the Jackson disclosure and gave its reasoning as follows:

That the copied claim, through step (d) thereof, reads upon the disclosure of Jackson does not appear to be controverted by appellant. Step (e) is performed in the separator * * * of the reference and step (f) by the hydrogen recycle * * *. Both appellant and the examiner seem to be reading limitations into the claims which are not present therein.

A rule 132 affidavit, by one Beavon, stated that the effect of not removing the diluent as appellant discloses to be:

(a) a greater amount of gas must be circulated to meet the hydrogen demand of the reaction system ; or

(b) the total pressure must be increased to obtain in a given volume the amount of hydrogen required for the reaction.

Appellant concludes that the affidavit is evidence that the partial pressure of the hydrogen "is raised" by the diluent removal and accordingly, a lesser amount of hydrogen-diluent mixture must be compressed. The board considered the affidavit to be "not relevant" insofar as all the claimed steps are performed by the Jackson patent. The board additionally noted that the affidavit did not take the compressor 44 into consideration. In his brief appellant states:

With reference to the drawing accompanying the application step (e) requires separating at least a substantial amount of the diluent from the

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